Date: 19981013
Docket: T-1923-97
| In the matter of an application to expunge the registration of the trade mark DECARIE bearing registration number TMA 439,504 and to amend the registration of the trade mark DECARIE LOGO DESIGN bearing registration number TMA 474,485 |
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Between:
GENERAL MOTORS OF CANADA
- and -
DÉCARIE CHEVROLET OLDSMOBILE LTÉE
Plaintiffs
- and -
DÉCARIE MOTORS INC./
LES MOTEURS DÉCARIE INC.
- and -
THE REGISTRAR OF TRADE-MARKS,
INDUSTRY CANADA, CANADIAN INTELLECTUAL
PROPERTY OFFICE,
TRADE MARKS OFFICE
Defendants
REASONS FOR ORDER AND ORDER
BLAIS J.
Page: 2
THE FACTS
[1] The plaintiffs are seeking to expunge the registration of the trade mark DECARIE bearing registration number TMA 439,504 and to amend the registration of the trade mark DECARIE LOGO DESIGN bearing registration number TMA 474,485.
[2] The defendant DÉCARIE MOTORS INC. has been operating a garage engaged in the sale, lease, servicing and repair of new and used motor vehicles, including automobiles, trucks and station wagons since 1949.
[3] On January 19, 1989, the defendant LES MOTEURS DÉCARIE INC. filed an application for trade mark registration with the Registrar to register the name DÉCARIE MOTORS INC. or its French-language version LES MOTEURS DÉCARIE INC.
[4] Pursuant to a request from the Registrar, the defendant LES MOTEURS DÉCARIE INC. filed an amended application for trade mark registration for DÉCARIE MOTORS INC. or LES MOTEURS DÉCARIE INC., waiving the rights to exclusive use of the word DÉCARIE and the word MOTORS except in the trade mark LES MOTEURS DÉCARIE INC. The trade mark DÉCARIE MOTORS was duly registered under number TMA 365,045 as of February 2, 1990.
[5] On July 26, 1993, the defendant LES MOTEURS DÉCARIE INC. filed a new application with the Registrar to register the trade mark DÉCARIE.
[6] On December 9, 1993, the Registrar of Trade-Marks informed the defendant LES MOTEURS DÉCARIE INC. that the mark DÉCARIE was considered to be primarily merely the name of an individual who was living or had died within the preceding thirty years and consequently did not appear to be registrable under section 12(1)(a) of the Act.
[7] On February 18, 1994, counsel for the defendant LES MOTEURS DÉCARIE INC. sent a letter accompanied by an affidavit signed by Mr. Joël Ségal tending to show that the mark DÉCARIE had become distinctive and could not be taken as a name when used in association with the sale, lease, servicing and repair of motor vehicles.
[8] Mr. Ségal"s affidavit was accompanied by no fewer than forty-seven different exhibits tending to show that the name DÉCARIE had become distinctive and could now be registered as a trade mark.
[9] The Registrar of Trade-Marks therefore registered the name DÉCARIE as a trade mark as of February 17, 1995.
[10] On April 24, 1996, the defendant LES MOTEURS DÉCARIE INC. filed an application for the registration of a trade mark, namely, the graphical representation of LES MOTEURS DÉCARIE INC.
[11] On September 13, 1996, the Registrar of Trade-Marks asked the defendant LES MOTEURS DÉCARIE INC. to abandon the right to the exclusive use of the words MOTEUR and MOTORS because, and I quote the English version, "They describe a character of the wares and services."
[12] He consequently requested that an amended application be filed.
[13] On September 18, 1996, the representative of LES MOTEURS DÉCARIE INC. filed a revised trade mark registration application in which the defendant waived the rights of exclusive use of the words MOTEURS and MOTORS except in the trade mark.
[14] On February 28, 1997, the Registrar of Trade-Marks issued a notice that the descriptive logo DÉCARIE was accepted as a trade mark.
[15] The registration of the trade mark DÉCARIE LOGO DESIGN, hereinafter referred to as "DÉCARIE LOGO DESIGN", and the registration of the trade mark DÉCARIE are to the effect that the name DÉCARIE has been used in Canada since at least June 10, 1971.
[16] Two other firms are engaged in the operation of a garage for the sale, lease, servicing and repair of motor vehicles under the name DÉCARIE: 2528-9323 Québec Inc., having operated under the company name PASSEPORT DÉCARIE AUTOMOBILE and now operating under the name DÉCARIE SATURN SAAB ISUZU, and another firm, DÉCARIE CHEVROLET OLDSMOBILE LTÉE, which is a plaintiff in this proceeding.
[17] The defendant LES MOTEURS DÉCARIE INC. sued the two firms referred to above for damages and an injunction that would prevent them from using the word DÉCARIE in either their name or their advertising, and these actions are now pending in the Superior Court of the district of Montréal.
[18] On September 2, 1997, the plaintiffs GENERAL MOTORS DU CANADA and DÉCARIE CHEVROLET OLDSMOBILE LTÉE filed an application in this Court for an order invalidating and expunging from the Canadian Trade Marks Register the registration TMA 439,504 of February 17, 1995 for the mark DÉCARIE and an amendment to the trade mark DÉCARIE LOGO DESIGN for the purpose of obtaining the abandonment of the right of the defendant LES MOTEURS DÉCARIE INC. to the exclusive use of the name DÉCARIE apart from the mark DÉCARIE LOGO DESIGN.
GROUNDS OF THE APPLICATION
[19] In support of their application, the plaintiffs claim that the said registrations of the marks DÉCARIE and DÉCARIE LOGO DESIGN in the Canadian Trade Marks Register do not accurately express or define the existing rights of the defendant DÉCARIE MOTORS and more particularly that:
| (a) The mark DÉCARIE was not registrable on the date of its registration and is still not registrable under sections 12(1)(a) and 18(1)(a) of the Trade-marks Act1 (the "Act"). |
| (b) The mark DÉCARIE was not distinctive at the time when the present proceedings bringing the validity of the registration TMA 439,504 into question were commenced, nor was it at the date of registration and nor has it since become distinctive under sections 2, 12(2) and 18(1)(b) of the Act; |
| (c) The defendant DÉCARIE MOTORS INC. has abandoned the mark DÉCARIE under section 18(1)(c) of the Act. |
[20] Plaintiffs" counsel makes four submissions in particular:
| (a) The name DÉCARIE is a surname and is therefore not registrable under section 12(1)(a) of the Act; |
| In this regard, plaintiffs" counsel argues that the surname DÉCARIE was not registrable at the actual date of registration in 1989, since the surname DÉCARIE appears several hundred times in the telephone book and has been used many times previously in the names of companies engaged in the sale of goods and services in Montréal and the surrounding region, particularly in the area around Décarie Boulevard; |
| (b) The name DÉCARIE is the name of a well-known boulevard in Montréal, which was named Décarie Boulevard in honour of the Décarie family, who owned numerous properties in the Montréal area and also in relation to the fact that two individuals by the name of Décarie were members of Quebec"s legislative assembly at the turn of the century; |
| (c) The name DÉCARIE is not distinctive in itself and in no way distinguishes the goods that are sold by the defendant LES MOTEURS DÉCARIE INC.; |
| (d) And the fourth submission is that the defendant LES MOTEURS DÉCARIE INC. has never used the name DÉCARIE alone and that the name DÉCARIE has always been used in conjunction with the words MOTEURS or MOTORS in English. |
[21] Plaintiffs" counsel further explains that these four arguments are cumulative, that the defendants have an obligation to reply to all four, and that failure to do so will void the registration of the trade mark.
[22] Furthermore, LES MOTEURS DÉCARIE INC. was initially situated on Décarie Boulevard, but has since moved to another street in the neighbourhood.
[23] Referring to his first submission, plaintiffs" counsel cites a number of cases as authority for the proposition that attempts to register surnames or names designating a particular territory have been rejected on more than one occasion.
[24] As to the second submission, that the registration of a geographical name breaches section 12(1)(b) of the Act, counsel explains that the major reason for prohibiting a geographical identification is that it prevents other commercial outlets situated on the same street or within the same geographical area from using that name, which would result in unfair competition between firms.
[25] Plaintiffs" counsel notes as well that the use of the name DÉCARIE does not in any way conjure up the image of a luxury automobile, but merely recalls the name of a famous boulevard, and that whenever the name DÉCARIE is mentioned in the Montréal area, people are automatically referring to a boulevard in the Montréal area that is particularly famous for its traffic congestion.
[26] As to the third point, the Act states that the mark must give the product a distinctive name.
[27] Plaintiffs" counsel argues that the answer to whether the mark DÉCARIE distinguishes the product LES MOTEURS DÉCARIE INC. from other products is negative since there is no relationship between the mark DÉCARIE and the sale of automobiles, still less luxury automobiles.
[28] Likewise, plaintiffs" counsel notes that in 1989 the Registrar of Trade-marks asked LES MOTEURS DÉCARIE INC. to abandon the exclusive use of the name DÉCARIE, alleging in fact that DÉCARIE was a surname.
[29] The defendants LES MOTEURS DÉCARIE INC. therefore abandoned the exclusive use of the name DÉCARIE until 1993, when they filed a new application and obtained the said registration of the trade mark on the strength of an affidavit that was, to say the least, incomplete, according to counsel. He argues that the Registrar wrongly granted this trade mark, in particular on the strength of the affidavit of Mr. Joël Ségal, dated February 17, 1994 and uncontradicted at the time, and that if all the facts had been brought to the attention of the Registrar at that time, he would not have registered the name DÉCARIE as he did.
[30] As to the fourth submission, plaintiffs" counsel suggests that the trade mark DÉCARIE has been abandoned pursuant to section 18(1)(c) since no use of the mark DÉCARIE has been demonstrated or proved since the date of its registration, that is, from 1994 to now.
[31] Thus the plaintiffs are contending that the registration of the two trade marks fails to comply with the requirements of section 12(1)(a) and 12(1)(b) of the Act and that the provisions of section 18(1)(c) are fulfilled, in that the defendants have abandoned the use of the trade mark or at least have failed to prove the use of this trade mark.
DEFENDANTS" SUBMISSIONS
[32] In reply to these submissions, the defendants" counsel explains at the outset that this is not an appeal from the Registrar"s decision; indeed, the decision was rendered in accordance with the Act and the defendants have scrupulously adhered to the provisions of section 12(2) of the Act, which states:
| 12.(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
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12.(2) Une marque de commerce qui n"est pas enregistrable en raison de l"alinéa (1)a) ou b) peut être enregistrée si elle a été employée au Canada par le requérant ou son prédécesseur en titre de façon à être devenue distinctive à la date de la production d"une demande d"enregistrement la concernant.
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[33] Counsel argues that whether the Registrar was right or wrong is irrelevant, since the defendants have done what they had to do. Faced with the initial rejection by the Registrar, they demonstrated that the name had been used in Canada by the defendants since 1971 and that this name had thereby become a distinctive trade mark as of the date of filing of the application for registration.
[34] Defendants" counsel submit that they have satisfied the requirements of the Act and that the burden is now reversed and the plaintiffs have the responsibility of demonstrating that the name DÉCARIE was not registrable at its date of registration, February 17, 1995 or at the date when these legal proceedings were undertaken, September 2, 1997.
[35] Counsel submitted numerous authorities in support of his position, particularly in relation to the fact that the validity of a trade mark, once it has been registered, is presumed, and that it is incumbent on whoever wishes to have it cancelled to submit the necessary evidence to rebut the presumption.
[36] Defendants" counsel submitted in part that the word DÉCARIE, contrary to the submissions of counsel for the plaintiffs, was used alone in a different script and with a different size of letters, both in its outside advertising on the building they occupy in Montréal and in all of the advertising used by the firm in its business.
[37] The advertising documents and exhibits filed tend to show, he said, that the word DÉCARIE is still used pre-eminently and individually, independently of MOTORS or LES MOTEURS, which generally accompany it.
[38] Counsel filed as exhibits a number of examples of advertising tending to show as well that such expressions as "Come to Décarie" have led people to understand that once they hear the word DÉCARIE, they immediately think of the garage, LES MOTEURS DÉCARIE INC., which is in particular a vendor of luxury automobiles.
THE CASE LAW
[39] The parties filed abundant case law in support of their respective claims.
[40] I shall begin by quoting what Denault J. had to say in Steinberg Inc. v. J.L. Duval Ltée:2
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According to s. 18 (1)(b) of the Act, the registration of a trade mark is invalid if the trade mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced (hereinafter referred to as "the material date"). It is authoritatively settled that, in expungement proceedings, the onus of proving that the registration is invalid is on the party alleging the invalidity.... |
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Consequently, "distinctiveness" as it applies to a particular trade mark cannot be determined in abstracto . Rather, the "distinctiveness" quality of a trade mark must be appreciated in light of the specific facts of each case. In my opinion, the court should always begin its analysis with an examination of the specific working used in the challenged registration. It should determine whether the owner of the mark and/or any other person was using the trade mark in question in association with the wares of [sic] services outlined in the registration, at the material time. |
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[41] In Société pour l"expansion des tissue fins v. Marimac Inc.,3 Gomery J. explains:
The plaintiff"s trade mark has acquired distinctiveness and secondary meaning due to extensive advertising and the fact that the plaintiff always insisted that its merchandise be identified by the trade mark. The general public has come to know and identify the trade mark with the plaintiff"s goods.
[42] Mr. Harold G. Fox has clearly stated what evidence a court needs in order to expunge a trade mark:
Therefore, in order to show that a registration ought to be expunged on the ground that it ought not to have been registered as, for example, as not being a trade mark or by falling within the exceptions of s. 12(1)(a) or (b), evidence to this effect must be adduced. Such evidence on an application to expunge must show a stronger case than on an application to register.4
[43] Also on this issue, see the comments by Cattanach J. in Mr. P"s Mastertune Ignition Services v. Tune Masters:5
I should think that when a trade mark has been registered there is a presumption of its validity. Being a presumption, however, that presumption is subject to rebuttal. Thus it follows that the party who seeks to expunge a trade mark as being invalid must bear the onus of doing so and if doubt exists that doubt must be resolved in favour of the validity of the trade mark.
[44] In McDonald"s Corp. v. Silcorp Ltd.,6 Strayer J. explained the Court"s role and the factors that might warrant its intervention:
It seems clear that in opposition proceedings where the issue is essentially one of fact concerning confusion or distinctiveness the decision of the registrar or the Board represents a finding of fact and not the exercise of discretion. Therefore the court should not impose upon itself the same degree of restraint, in reviewing that decision, as it would if the decision were essentially an exercise of discretion. It is thus free to review the facts to determine whether the decision of the registrar or Board was correct, but that decision should not be set aside lightly considering the expertise of those who regularly make such determinations.
[45] As to the graphic use of the word DÉCARIE on automobile licence plates or on the various types of graphical representations or advertising, it is worth referring to the decision of Mr. A.M. Troicuk in Nightingale Interloc Ltd. v. Prodesign Ltd.:7
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Use of a mark in combination with additional material constitutes use of the mark per se as a trade mark if the public, as a matter of first impression, would perceive the mark per se as being used as a trade mark. This is a question of fact dependent upon such factors as whether the mark stands out from the additional material, for example by the use of different lettering or sizing (see e.g., Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. et al. (1971), 1 C.P.R. (2d) 155 at p. 163, [1971] F.C. 106), or whether the additional material would be perceived as purely descriptive matter or as a separate trade mark or trade name: see e.g., Carling O"Keefe Ltd. v. Molson Cos. Ltd. (1982), 70 C.P.R. (2d) 279 at pp. 280-1, applying Bulova Accutron Trade Mark, [1969] R.P.C. 102 at pp. 109-10. |
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[46] As to whether a trade mark that is not naturally distinctive may be registered, see the comments by Cattanach J. in his decision of August 3, 1971 in Standard Coil Products Ltd. v. Standard Radio Corp.,8 and I quote:
...a trade mark that is not inherently distinctive may be registered if it is established, as a fact, that it actually distinguishes the wares of its owner. In this latter circumstance no words are precluded from registration as a trade mark.
[47] As to the eloquent demonstration by plaintiffs" counsel that the word DÉCARIE has been used by many stores and businesses over the years, it is interesting to refer to what Tremblay-Lamer J. said in Molson Breweries v. John Labatt Ltd. :9
I disagree that the Appellant has to show exclusive use of the trade-mark in order to meet the requirements of subsection 12(2). Nowhere is this alleged requirement mentioned in section 12. Neither is it included in the definition of the term "distinctive" in section 2. Where exclusivity of use or of rights is provided for in the Act, it is expressly stated. It follows that if the legislator is silent on a requirement of exclusivity in the definition of distinctive, it intended to be so.
[48] Counsel for the plaintiff filed as reference material the judgment in Galanos v. Registrar of Trade marks,10 a decision of Cattanach J. In that case the court overturned a decision by the Registrar of Trade-marks, in particular because the name Galanos appeared in only five places in the Montréal and Toronto telephone books, it was a rare name and could have been invented for the purposes of creating a trade mark:
I have difficulty in appreciating that the purchasing public would respond to the word "Galanos" prominently displayed on the label of a bottle of toilet water by spontaneously thinking of it as being the surname of an individual.
In my opinion a Canadian or ordinary intelligence and education in English or French would be as likely, if not more likely, to respond to the word by thinking of it as a coined, fanciful or invented word used as a brand or trade mark of a business as by thinking of it as primarily merely the surname of an individual.
[49] Plaintiffs" counsel also filed the decision of Cattanach J. in Molson Companies Ltd. v. John Labatt Ltd .11 Cattanach J. states, at p. 164:
There is evidence that "Labatt" is a personal surname. The disclaimer of the word is, by necessary inference, evidence of that.
[50] Elsewhere in this decision, Cattanach J. states:
The Registrar required the applicant for registration to disclaim the right to the exclusive use of the word "Labatt" as part of the trade mark in accordance with s. 34 of the Act, on the ground that the word is not independently registrable by reason of para. 12(1)(a) in that the word "Labatt" is primarily merely the surname of an individual.
[51] Consequently, this decision is not readily applicable to our case since on the facts the defendants LES MOTEURS DÉCARIE INC. had agreed, as in John Labatt Ltd., not to use the word DÉCARIE distinctively at first, but they tried again with the Registrar in 1993, asking that he register the word DÉCARIE pursuant to section 12(2) of the Act, which requires different evidence.
[52] As to the decision in Standard Oil Co. v. Registrar of Trade marks,12 again, it is hard to see how this decision applies since it was an application made pursuant to section 12(1)(a) of the Act, which is not the case in this instance.
[53] Counsel for the defendants rightly argued that the cases filed in support of the application were more applicable to proposed trade marks within the meaning of sections 12(1)(a) and 12(1)(b) of the Act.
DECISION
[54] Having reviewed the documentary evidence filed by the parties, and having heard counsel for both parties and deliberated, I conclude that the registration of the names DÉCARIE and DÉCARIE LOGO DESIGN was made in accordance with the legal provisions of section 12(2) of the Act, that is, that the defendants had unequivocally demonstrated to the Registrar of Trade-marks that they had used the name DÉCARIE without interruption since at least 1971 and the Registrar agreed with them.
[55] As explained earlier, this is not an appeal or a review of the Registrar"s decision, but a determination as to whether the plaintiffs in this proceeding have demonstrated that the registration of the trade mark is invalid.
[56] To this effect, although I was swayed by the arguments raised by the plaintiffs" counsel, the first two arguments are obsolete, since even if the registration of the name DÉCARIE did not satisfy the requirements of section 12(1)(a) and 12(1)(b) " since it involved a person"s name and the name of a place of origin " the defendants registered the name under section 12(2), they have responded adequately to the objections raised by the Registrar in regard to the section 12(1)(a) and (b) requirements and they have clearly demonstrated that the distinctiveness had been established since 1971.
[57] With regard to the third argument, that the mark DÉCARIE had not retained its distinctiveness since DÉCARIE has nothing to do with the sale or service of automobile-related products, evidence was adduced before the Registrar that the distinctiveness had been established since 1971, and the evidence adduced before me has not persuaded me that the Registrar"s decision to that effect was unreasonable in the circumstances.
[58] With regard to the fourth argument, that the mark DÉCARIE had been abandoned under section 18(1)(c) of the Act and had not been used since 1994, the record shows unequivocally that the mark DÉCARIE has in fact been used without interruption and with its distinctive character since the date of its registration.
[59] For all of these reasons, the plaintiffs" application is dismissed, with costs.
OTTAWA, ONTARIO
October 13, 1998
Certified true translation
Bernard Olivier
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
| STYLE: GENERAL MOTORS OF CANADA ET AL. - AND - |
| DÉCARIE MOTORS INC. ET AL. |
| PLACE OF HEARING: Montréal, Quebec |
| DATE OF HEARING: September 8, 1998 |
REASONS FOR ORDER OF BLAIS J.
APPEARANCES:
| Mr. Bruce Johnston FOR THE PLAINTIFFS |
| Mr. Harold W. Ashenmil and FOR THE DEFENDANTS |
Mr. Jean-Nicolas Delage
SOLICITORS OF RECORD:
| Pinsonnault, Torralbo, Hudon FOR THE PLAINTIFFS |
Montréal, Quebec
| Phillips, Friedman, Kotler FOR THE DEFENDANTS |
Montréal, Quebec
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1 R.S.C 1985, c. T-10.
2 (1992), 44 C.P.R. (3d) 417, [1993] 1 F.C. 145 (F.C.T.D.).
3 (1984), 78 C.P.R. (2d) 112 (Que. S.C.), [78 C.P.R. (2d) 126].
4 The Canadian Law of Trade Marks and Unfair Competition (Toronto: Carswell, 1972), page 314. Defendants" Book of Authorities, tab 3.
5 (1984), 82 C.P.R. (2d) 128, at p. 134.
6 (1989), 24 C.P.R. (3d) 207 à la page 10, 25 F.T.R. 151, 23 C.I.P.R. 292 (T.D.); affirmed 41 C.P.R. (3d) 67, 139 N.R. 319, 54 F.T.R. 80n (C.A.)
7 (June 29, 1984), 2 C.P.R. (3d) 535, at p. 538.
8 (1971), 1 C.P.R. (2d) 155, at p. 166.
9 T-162-96, at p. 10 (June 25, 1998).
10 (November 24, 1982), 69 C.P.R. (2d) 144.
11 (October 28, 1981), 58 C.P.R. (2d) 157.
12 (June 7, 1968), 55 C.P.R. 49.
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